Did you receive a letter from Kilpatrick Townsend Law Firm or Apple Brand Protection regarding Apple Infringement or selling counterfeit trademark goods on Amazon? Important public notice.
2021 Updates: Click here to listen to our podcast on Vondran Legal Hour discussing dealing with responding to an Apple infringement letter.
In today's digital marketplace, selling infringing or counterfeit goods (ex. software or hardware) on websites such as Amazon.com could lead to serious legal problems with major manufacturers such as Autodesk, Microsoft, Apple, Adobe and others. This blog discusses some issues you need to know if you received a letter alleging illegal activity and seeking a response. This can be a serious legal issue that requires experienced intellectual property counsel to address. While some people don't believe these letters are real and ignore them (sometimes to the point where legal action is triggered) in many cases these cease and desist letters are real and should be dealt with by a professional.
NOTE - WE HANDLE PRODUCTS OTHER THAN APPLE - SO CONTACT US IF YOU RECEIVED A LEGAL DEMAND LETTER FROM ANY FIRM.
HERE IS A GOOD PODCAST TO LISTEN TO Selling Counterfeit goods on Etsy, Shopify, eBay, Amazon or Alibaba can lead to 2 million in damages.
Apple's position on software piracy
According to their website:
“Apple actively and aggressively enforces its intellectual property rights to the fullest extent of the law. Apple works closely with the Business Software Alliance (BSA) and the Software Information Industry Association (SIIA) to combat software piracy worldwide.”
Their page goes on to talk about civil and criminal penalties that are possible in infringement cases:
“The illegal copying of software programs is a crime! In the United States and many other countries, copyright law provides for severe civil and criminal penalties for the unauthorized reproduction or distribution of copyrighted material. Copyrighted material includes, but is not limited to, computer programs and accompanying sounds, images and text. Under U.S. law, infringement may result in civil damages of up to $150,000 and/or criminal penalties of up to five years imprisonment and/or a $250,000 fine.”
Their site also offers a page where you can report piracy to Apple (ex. for iTunes infringement or App store infringement or other types)
Kilpatrick Townsend is a powerhouse intellectual property law firm not to be taken lightly. They are a large firm with offices in Los Angeles, New York, Atlanta Georgia, Augusta, Charlotte North Carolina, Dallas Teaxs, Dencer Colorado, San Diego, California, San Francisco, and Seattle Washington and have a large number of lawyers.
What might a legal demand letter say?
Here are snippets from one letter we recently received alleging illegal activity on Amazon website. The letter states:
“We represent Apple Inc. (“Apple”) in connection with intellectual property matters. Apple owns many intellectual property rights for its products, including, for example, registered trademarks for APPLE, IPHONE, the Apple Logo, APPLE LIGHTNING, Apple's connector icon and the design of its distinctive USB power adapter (collectively, the “Apple Marks”) see, e.g., U.S. Reg. Nos. 2,715,578; 3,669,402; 3,928,818; 4,174,205; 4,359,316; 4,726,737; and 4,726,738). Apple also owns many copyright, patents and other forms of intellectual property in innovative product designs, technology and marketing images (together with the Apple Marks, the “Apple IP”).
It has recently come to Apple's attention that you are offering for sale and selling, including through the Amazon storefront identified above (the “Amazon Storefront”), counterfeit and/or infringing Apple products, including counterfeit versions of its 12W adapters and packaging, which bear unauthorized copies of the Apple Marks in addition to infringing other Apple IP (the “Counterfeit Products”). These infringements have been confirmed through one or more test purchases of Counterfeit Products and your seller information has been provided to us by Amazon.”
(trafficking in counterfeit goods or services). This law has both civil and criminal penalties. The letter may also make certain types of demands on you or your company. For example to:
- Stop offering for sale, selling or distributing all Counterfeit Products or any other products that infringe Apple's rights, whether at your Amazon Storefront or elsewhere around the world;
- Provide the identities, locations and complete contact details of all manufacturers, suppliers, or distributors from which you purchased or received any Apple products, including without limitation Counterfeit Products;
- Provide complete and accurate records of all of your purchases of any Apple products, including without limitation Counterfeit Products, including copies of all invoices, shipping records, and correspondence with the source(s) of such products;
- Provide complete and accurate details of your sales of any Apple products, including without limitation Counterfeit Products, whether through your Amazon Storefront or otherwise, including (a) copies of all invoices, shipping records, and correspondence with Amazon and/or buyers; (b) the total number of units distributed and/or sold to date; and (c) the total amount of money received to date from the sale and distribution of the products;
- Provide a written inventory of the total number of Apple products, including without limitation Counterfeit Products, currently in your possession or control, and provide written confirmation that, upon Apple's request, you will turn over to Apple any remaining inventory of such products for examination;
- Provide a written inventory of the total number of Apple products, including without limitation Counterfeit Products, currently warehoused at Amazon's fulfillment centers, and provide written confirmation that, upon Apple's request, you will provide the written permissions necessary to allow Amazon to transfer any such warehoused products to Apple for examination; and
- Provide written confirmation that you have complied with each of the requests above and will not infringe the Apple IP in the
These types of legal demands need to be taken serious and our IP firm can help you respond and protect your rights.
Products that may be allegedly infringing
Apple obviously makes computer products, software and hardware. Here are some of the products that may be at issue in a trademark or copyright related IP infringement accusation:
- Apple Lightning cables
- USB Chargers (“Apple chargers”) – note “apple compatible chargers” is a distinction with a difference.
- USB adapters
- Apple watch
If you are dealing with an issue that is not on this list, call us to discuss at the number below.
Counterfeit and/or infringing goods – 18 U.S.C. 2320
Here is the law cited above for your reference on selling counterfeit goods online (this federal statute may be cited in the legal demand letter):
(1) traffics in goods or services and knowingly uses a counterfeit mark on or in connection with such goods or services,
(2) traffics in labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging of any type or nature, knowing that a counterfeit mark has been applied thereto, the use of which is likely to cause confusion, to cause mistake, or to deceive,
(3) traffics in goods or services knowing that such good or service is a counterfeit military good or service the use, malfunction, or failure of which is likely to cause serious bodily injury or death, the disclosure of classified information, impairment of combat operations, or other significant harm to a combat operation, a member of the Armed Forces, or to national security,
(4) traffics in a drug and knowingly uses a counterfeit mark on or in connection with such drug, or attempts or conspires to violate any of paragraphs (1) through (4) shall be punished as provided in subsection (b). Here are the potential penalties
(b) Penalties.— (1) In general.— Whoever commits an offense under subsection (a)— (A) if an individual, shall be fined not more than $2,000,000 or imprisoned not more than 10 years, or both, and, if a person other than an individual, shall be fined not more than $5,000,000; and (B) for a second or subsequent offense under subsection (a), if an individual, shall be fined not more than $5,000,000 or imprisoned not more than 20 years, or both, and if other than an individual, shall be fined not more than $15,000,000.
As you can see there are serious potential ramifications which makes it all the more important to discuss with legal counsel BEFORE PICKING UP THE PHONE AND TRYING TO HANDLE YOUR OWN CASE WITH AN EXPERIENCED INFRINGEMENT ATTORNEY.
We can also help you secure legal rights to Apple's Copyrights and Trademarks
In some circumstances, you can acquire legal permissions to use Apply intellectual property. Here is a link to their page on seeking permission. We can help with the legal side of this if you do not want to take any risks. For example, manufacturers and developers of Apple accessories, wired or wireless (ex Belkin), can apply for the "Apple MFi program" and seek to become certified through Apple's licensing program for iPhone, Ipad, Ipod, ear pods and apple watch accessories for example. You can learn more about that here. Contact us below for more information if you seek legal assistance..
Contact an Apple infringement Defense Law Firm
If you received a letter from Apple, or Kirkpatrick Townsend (a powerhouse intellectual property law firm from New York), with possibly an attachment from the U.S. Customs and Border Protection (copied to Apple in Cupertino, California), you need to take this letter seriously. Serious ramifications exist for IP infringement (patents, trademarks, copyrights, trade secrets) and civil and criminal penalties can apply depending upon the magnitude of the infringement or counterfeits.
We can help with all types of software and hardware infringement matters. Call us at (877) 276-5084 for a no-cost initial consultation. All calls are confidential whether you retain us or not. For most non-litigation cases we are able to structure low flat rate legal fees to help both small businesses and startups. Our firm was established in 2004 and we have helped many small and mid-sized businesses and have defended many companies and individuals (in over 200 federal court cases). In this speciality area of law, there is no substitute for experience.